OPPOSITION No B 3 094 555

Puig France, Société par Actions Simplifiée, 65-67 avenue des Champs Elysées, 75008 Paris, France (opponent), represented by Elzaburu, S.L.P., Miguel Ángel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

S. Malhotra & Co. AG, Haldenstrasse 5, 6340 Baar, Switzerland (applicant), represented by Nachtwey IP Rechtsanwälte, Buschhöhe 10, 28357 Bremen, Germany (professional representative).

On 21/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 555 is upheld for all the contested goods and services, namely:

Class 3: Bath preparations; body cleaning and beauty care preparations; cleaning and fragrancing preparations; deodorants and antiperspirants; essential oils and aromatic extracts; hair preparations and treatments; hair removal and shaving preparations; household fragrances; laundry preparations; leather and shoe cleaning and polishing preparations; makeup; oral hygiene preparations; perfumery and fragrances; perfume; shaving preparations; skin, eye and nail care preparations; soaps and gels; toiletries; abrasives; cosmetics; vehicle cleaning preparations.

Class 35: Online retail store services relating to cosmetic and beauty products; retail services in relation to beauty implements for humans; retail services in relation to hair products; retail services in relation to toiletries; online retail services relating to cosmetics; retail services in relation to fragrancing preparations; retail services relating to fragrancing preparations; retail services connected with the sale of subscription boxes containing cosmetics; retail services in relation to hygienic implements for humans.

2. European Union trade mark application No 18 062 120 is rejected for the above contested goods and services. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 062 120 ‘LES MAINS DU TEMPS’ (word mark) namely against all the goods in Class 3 and some services in Class 35. The opposition is based on, inter alia, European Union trade mark registration No 6 398 507 (figurative). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 6 398 507 (figurative).

The goods and services

The goods on which the opposition is based are the following:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions, deodorants for personal use; dentifrices; adhesives for cosmetic purposes; antiperspirants [toiletries]; bath salts, not for medical purposes; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; eyelashes (adhesives for affixing false - ); false eyelashes; false nails; incense; joss sticks; lacquer-removing preparations; potpourris [fragrances]; sachets for perfuming linen; scented wood; shampoos; shaving stones, antiseptic; swabs [toiletries]; toiletries; transfers (decorative --- ) for cosmetic purposes; varnish-removing preparations.

The contested goods and services are the following:

Class 3: Bath preparations; body cleaning and beauty care preparations; cleaning and fragrancing preparations; deodorants and antiperspirants; essential oils and aromatic extracts; hair preparations and treatments; hair removal and shaving preparations; household fragrances; laundry preparations; leather and shoe cleaning and polishing preparations; makeup; oral hygiene preparations; perfumery and fragrances; perfume; shaving preparations; skin, eye and nail care preparations; soaps and gels; toiletries; abrasives; cosmetics; vehicle cleaning preparations.

Class 35: Online retail store services relating to cosmetic and beauty products; retail services in relation to beauty implements for humans; retail services in relation to hair products; retail services in relation to toiletries; online retail services relating to cosmetics; retail services in relation to fragrancing preparations; retail services relating to fragrancing preparations; retail services connected with the sale of subscription boxes containing cosmetics; retail services in relation to hygienic implements for humans.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 3

The contested cleaning preparations; deodorants and antiperspirants; essential oils; laundry preparations; polishing preparations; perfumery; soaps; toiletries; abrasives; cosmetics are identically contained in both lists of goods (including synonymous).

Aromatic extracts are identical to the opponent’s essential oils as they overlap.

The contested bath preparations; body cleaning and beauty care preparations; hair preparations and treatments; hair removal and shaving preparations; make-up; shaving preparations; skin, eye and nail care preparations; gels are identical to the opponent’s cosmetics, either because they are identically contained in both lists (including synonyms) or because the applicant’s goods in this class are included in or overlap with the opponent’s cosmetics.

The contested fragrancing preparations; household fragrances; fragrances; perfume include, as broader category, the opponent’s potpourris [fragrances]. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested leather and shoe cleaning preparations; vehicle cleaning preparations are included in the broad category of the opponent’s cleaning preparations. Therefore, they are identical.

The contested oral hygiene preparations include, as broader category, the opponent’s dentifrices. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

Contested services in Class 35

The contested services online retail store services relating to cosmetic and beauty products and retail services in relation to beauty implements for humans; retail services in relation to hair products; retail services in relation to toiletries; online retail services relating to cosmetics; retail services in relation to fragrancing preparations; retail services relating to fragrancing preparations; retail services connected with the sale of subscription boxes containing cosmetics; retail services in relation to hygienic implements for humans are at least similar to a low degree to the opponent’s cosmetics, toiletries, potpourris [fragrances] and soaps, taking into account that although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public (20/03/2018, T-390/16, DONTORO dog friendship (fig.)/TORO et al., EU:T:2018:156, § 33; 07/10/2015, T-365/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:763, § 34).

a) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is considered to be average.

b) The signs

	LES MAINS DU TEMPS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The expression ‘L’air du Temps’ of the earlier mark is a French expression that can be translated as to "the current trend". However, it may be perceived by the Spanish and Italian-speaking part of the public as the mere combination of terms referring to a fanciful expression, ‘the air of the time’. This is because these words are very similar in Italian and Spanish being ‘L’aria del tempo’ and ‘El aire del tiempo’, respectively. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish and Italian-speaking part of the public as it is the part of the public in the relevant territory that associates these words with the meaning explained above, since from their perspective the signs bear conceptual similarities that may not arise from the perspective of the rest of the public.

As a whole, the contested sign may be perceived by the relevant public under analysis, as the mere combination of the meaningful elements ‘LES MAINS DU TEMPS’, as referring to a fanciful expression, of which the vast majority of the relevant public under analysis will only retrieve the meaning of the elements ‘LES/DU/TEMPS’, due to their similarity in Italian and Spanish, ‘LE/DEL/TEMPO’ and ‘Las/del/Tiempo’, respectively.

These words included in the earlier mark, and in which consists of the contested sign, do not relate to the goods and services in question and are, therefore, distinctive to a normal degree.

As regards the earlier mark, it is composed also of a distinctive figurative element of two white birds against a decorative yellow background. In any event, it should be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the Opposition Division is of the opinion that the relevant public will focus on the verbal element ‘L’air du Temps’ in the earlier mark. Furthermore, the stylisation of the letters in the earlier mark will play a secondary role in the comparison.

The earlier mark has no element that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the structure of their verbal elements and in almost all their letters and sounds, ‘L* DU TEMPS’, whereas they differ in the sign’s respective letters/sounds ‘AIR’ in the earlier mark and ‘-ES MAINS’ in contested sign (although these components share some letters, such as ‘A’ and ‘I’, they have only a limited similarity as are placed in a different position in the signs). Visually, they differ also in the figurative element of the earlier mark included in a yellow background, with lesser impact on consumers than the coinciding verbal elements. Furthermore, as abovementioned, the stylisation of the verbal elements in the earlier mark is not of such a nature as to detract the consumers’ attention away from the verbal elements.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as related to the concept of ‘du temps’ / ‘of the time’, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

c) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

d) Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In the present case, the goods and services are partly identical and partly to at least a low degree and are directed at the public at large and at business customers with specific professional knowledge or expertise, whose degree of attention is average. The distinctiveness of the earlier mark has been considered normal.

The signs are visually, aurally and conceptually similar to an average degree. This is because the signs coincide in their structure and in almost all their letters and sounds, ‘L* DU TEMPS’. The main differences between the signs are the letters/sounds ‘AIR’ in the earlier mark and ‘-ES MAINS’ in contested sign, and some secondary aspects, such as the stylisation of the letters and the figurative element against a yellow background of earlier mark.

Furthermore, as referred above, consumers have to rely on the imperfect recollection they have kept of the signs in their minds and, consequently, it is likely that they will probably misremember their differentiating letters and will erroneously believe that the contested goods and services come from the same undertaking or economically linked undertakings.

In addition, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In the present case, given the identity of the distinctive elements, ‘du temps’, it is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods and services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

It is therefore considered that the differences between the signs are clearly not capable to outweigh their visual, aural and conceptual similarities, especially because as it was pointed out both are connected to the concept of ‘du temps’, that is the concept of time.

Considering all the above, there is a likelihood of confusion on the part of the Spanish and Italian-speaking parts of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 6 398 507. It follows that the contested sign must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right, namely European Union trade mark registration No 6 398 507, leads to the success of the opposition and to the rejection of the contested sign for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Aldo BLASI

María Clara IBÁÑEZ FIORILLO

Aurelia PÉREZ BARBER

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.